UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
`
`NETFLIX, INC.,
`Petitioner,
`
`v.
`
`VIDEOLABS, INC.,
`Patent Owner.
`____________________
`
`Case: IPR2023-00628
`Patent No. 7,233,790 B2
`____________________
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 7,233,790 B2
`
`Petition Filing Date: February 22, 2023
`
`

`

`I. 
`II. 
`
`Patent No. 7,233,790
`Petition For Inter Partes Review
`TABLE OF CONTENTS
`INTRODUCTION ........................................................................................... 1 
`DISCRETIONARY ANALYSIS FOR REVIEW ........................................... 2 
`A. 
`Fintiv Factors ......................................................................................... 2 
`B. 
`Becton Dickinson/Advanced Bionics/General Plastics Factors ............ 4 
`PATENT OVERVIEW AND PRIORITY DATE ........................................... 5 
`A. 
`Background of Digital Content Provisioning Systems for Wireless
`Communication Devices ....................................................................... 5 
`Summary of the Alleged Invention of the ’790 Patent ......................... 6 
`B. 
`Representative Claims ........................................................................... 8 
`C. 
`The Prosecution History ...................................................................... 13 
`D. 
`Priority Date (June 19, 2003) .............................................................. 14 
`E. 
`Level of Ordinary Skill in the Art ....................................................... 16 
`F. 
`IDENTIFICATION OF PRIOR ART ........................................................... 16 
`A.  U.S. Patent Application Publication No. 2002/0131404 to Mehta (Ex.
`1003) .................................................................................................... 16 
`A Paper entitled “Mobile Applications with J2ME” to Schlapfer (Ex.
`1009) .................................................................................................... 19 
`Other Evidence Regarding the State of the Art ................................... 20 
`C. 
`IDENTIFICATION OF CHALLENGE AND RELIEF REQUESTED ....... 22 
`V. 
`VI.  CLAIM CONSTRUCTION .......................................................................... 22 
`VII.  GROUNDS OF UNPATENTABILITY ........................................................ 26 
`A.  Ground 1: Mehta Anticipates Claims 1-4 and 8-11 of the ’790 Patent26 
`1. 
`Claim 1 ...................................................................................... 26 
`
`III. 
`
`IV. 
`
`B. 
`
`
`
`
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`i
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`

`

`
`
`
`
`B. 
`
`Patent No. 7,233,790
`Petition For Inter Partes Review
`2. 
`Claim 2 ...................................................................................... 31 
`3. 
`Claim 3 ...................................................................................... 37 
`4. 
`Claim 4 ...................................................................................... 39 
`5. 
`Claim 8 ...................................................................................... 43 
`6. 
`Claims 9-11 based on Mehta ..................................................... 46 
`Ground 2: Mehta and Schlapfer Render Obvious Claims 1-14 of the
`’790 Patent ........................................................................................... 48 
`1. 
`Claim 2 ...................................................................................... 48 
`2. 
`Claim 3 ...................................................................................... 52 
`3. 
`Claim 4 ...................................................................................... 53 
`4. 
`Claim 5 ...................................................................................... 53 
`5. 
`Claim 6 ...................................................................................... 56 
`6. 
`Claim 7 ...................................................................................... 60 
`7. 
`Claims 9-14 in View of Mehta and Schlapfer .......................... 63 
`8. 
`Claims 1 and 8 in view of Mehta and Schlapfer ....................... 66 
`9. 
`Obviousness Based on Mehta and Schlapfer ............................ 66 
`VIII.  SECONDARY CONSIDERATIONS ........................................................... 70 
`IX.  MANDATORY NOTICES ........................................................................... 71 
`A. 
`Real Parties-in-Interest ........................................................................ 71 
`B. 
`Related Matters .................................................................................... 71 
`C. 
`Lead/Back-up Counsel ........................................................................ 71 
`D. 
`Service Information ............................................................................. 72 
`X.  GROUNDS FOR STANDING ...................................................................... 72 
`
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`Patent No. 7,233,790
`Petition For Inter Partes Review
`XI.  CONCLUSION .............................................................................................. 72 
`
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`iii
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`Patent No. 7,233,790
`Petition For Inter Partes Review
`
`
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`
`
`EXHIBIT LIST
`
`Exhibit
`Number Description
`1001
`Patent-at-Issue: U.S. Patent No. 7,233,790 to Kjellberg, “Device
`Capability Based Discovery, Packaging and Provisioning of Content
`for Wireless Mobile Devices,” filed on June 19, 2003 (“the ’790
`patent”).
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`Expert Declaration of Anthony Wechselberger.
`
`U.S. Patent Application Publication No. 2002/0131404 to Mehta,
`“Method and System for Maintaining and Distributing Wireless
`Applications,” filed on November 28, 2001 (“Mehta”).
`
`File History of the ’790 patent (Application No. 10/600,746) (“’790
`patent FH”).
`
`U.S. Provisional Application No. 60/393,024.
`
`U.S. Provisional Application No. 60/392,383.
`
`U.S. Provisional Application No. 60/393,041.
`
`U.S. Provisional Application No. 60/392,999.
`
`C. Schläpfer, M. Kubik, and G. Zavagli, “Mobile Applications with
`J2ME,” A White Paper, Ericsson Radio Systems AB, July 7, 2001
`(“Schlapfer”).
`
`U.S. Patent No. 7,283,811 to Gidron, “System and Method for
`Aggregation of User Applications for Limited-Resource Devices,”
`filed on November 15, 2001 (“Gidron”).
`
`U.S. Patent No. 7,266,369 to Moles, “System and Method for
`Provisioning or Updating a Mobile Station Using Over-The-Air
`Transfer of Interpreted Byte-Code Program,” filed on April 4, 2000
`(“Moles”).
`
`1012
`
`U.S. Patent No. 8,107,937 to Jokinen, “System and Method for
`Automatic Provisioning Detection and Notification,” filed on July
`
`iv
`
`

`

`Patent No. 7,233,790
`Petition For Inter Partes Review
`
`
`
`31, 2001 (“Jokinen”).
`
`
`
`1013
`
`1014
`
`1015
`
`1016
`
`1017
`
`1018
`
`1019
`
`1020
`
`1021
`
`1022
`
`1023
`
`U.S. Patent No. 7,093,198 to Paatero, “Skins for Mobile
`Communication Devices,” filed on August 16, 2001 (“Paatero”).
`
`U.S. Patent Application Publication No. 2002/0069263 to Sears,
`“Wireless Java Technology,” filed on September 28, 2001 (“Sears”).
`
`U.S. Patent Application Publication No. 2002/0124065 to Barritt,
`“Mobile Computing System Architecture,” filed on August 6, 2001
`(“Barritt”).
`
`U.S. Patent Application Publication No. 2003/0101246 to Lahti,
`“System and Method for Identifying and Accessing Network
`Services,” filed on November 29, 2001 (“Lahti”).
`
`EP 1303153B1 to Chanrasiri, “Apparatus and method for selecting
`software modules in a mobile terminal,” filed on October 8, 2002
`(“Chanrasiri”).
`
`Starz Entm’t, LLC v. VL Collective IP, LLC, Amended Joint Claim
`Construction Chart, pages 1-14 (Dkt. 80).
`
`Unwired Planet, LLC v. Apple, Inc., Joint Claim Construction
`Statement, pages 1-7 (Dkt. 199).
`
`VideoLabs, Inc. v. Netflix Inc., Motion to Dismiss for Failure to State
`a Claim filed by Petitioner, pages 1-5 (Dkt. 15).
`
`VideoLabs, Inc. v. Netflix Inc., Opening Brief in Support re Motion to
`Dismiss for Failure to State a Claim filed by Petitioner, pages 1-31
`(Dkt. 16).
`
`VideoLabs, Inc. v. Netflix Inc., Answering Brief in Opposition re
`Motion to Dismiss for Failure to State a Claim filed by Patent
`Owner, pages 1-32 (Dkt. 18).
`
`VideoLabs, Inc. v. Netflix Inc., Reply Brief re Motion to Dismiss for
`Failure to State a Claim filed by Petitioner, pages 1-18 (Dkt. 19).
`
`1024
`
`M. Eyer, “The Challenge of a Standard Software API,” 2000 NCTA
`
`v
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`

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`Patent No. 7,233,790
`Petition For Inter Partes Review
`
`
`
`
`
`Tech. Papers, pp. 242-253, May 7-10, 2000.
`
`1025
`
`Starz Entm’t, LLC v. VL Collective IP, LLC, Claim Construction
`Order, pages 1-4 (Dkt. 88).
`
`vi
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`

`

`Patent No. 7,233,790
`Petition For Inter Partes Review
`I.
`INTRODUCTION
`Petitioner respectfully requests Inter Partes Review of claims 1-14 of U.S.
`
`
`
`
`
`Patent No. 7,233,790 (Ex. 1001), filed June 19, 2003 and assigned to VideoLabs,
`
`Inc. (“Patent Owner”).
`
`At its core, the ’790 patent purports to cover the basic idea of using a
`
`product catalog to manage different versions of a given item of digital content
`
`destined for use on wireless devices whereby each version of content corresponds
`
`to a different set of wireless device capabilities. Unsurprisingly, this simple
`
`concept was well-known before the ’790 patent. For example, all of four
`
`independent claims are anticipated by Mehta, which predates the ’790 patent but
`
`was never considered by the Patent Office. The remaining claims contain minor
`
`variations on the theme, all of which were well-known in the art at the time of the
`
`purported invention. Thus, as described further in this Petition, the prior art
`
`renders every claim of the ’790 patent anticipated or obvious and therefore
`
`unpatentable.
`
`As demonstrated below, there is a high likelihood that Petitioner will prevail
`
`with respect to each of the challenged claims and, therefore, Petitioner respectfully
`
`requests that the Board institute trial. Please assess any fee deficiency or credit to
`
`Deposit Account No. 232405.
`
`
`
` 1
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`Patent No. 7,233,790
`Petition For Inter Partes Review
`II. DISCRETIONARY ANALYSIS FOR REVIEW
`There is no reason for the Board to discretionarily deny this petition.
`
`
`
`
`
`Petitioner hereby stipulates that, if the Board grants institution, it will not assert in
`
`the parallel district court proceeding a ground that was raised or could have
`
`reasonably been raised in this proceeding. When a petitioner presents such a
`
`stipulation, “the PTAB will not discretionarily deny institution in view of parallel
`
`district court litigation.” USPTO Director’s Memorandum: Interim Procedure For
`
`Discretionary Denials In AIA Post-Grant Proceedings With Parallel District Court
`
`Litigation at 3, 7 (June 21, 2022); see also Sotera Wireless, Inc. v. Masimo Corp.,
`
`IPR2020-01019, Paper 12 at 13-14 (PTAB Dec. 1, 2020).
`
`A. Fintiv Factors
`The Fintiv factors do not weigh in favor of denying institution of trial in this
`
`matter. Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020)
`
`(precedential).
`
`For example, while no motion to stay pending IPR has yet been filed in the
`
`Delaware district court case, Fintiv factor one is neutral given that courts
`
`commonly stay cases upon IPR institution. VMWare, Inc. v. Intell. Ventures II
`
`LLC, IPR2020-00859, Paper 13 at 12 (PTAB Nov. 5, 2020) (finding factor one
`
`neutral, even though Petitioner had not previously sought a stay, and despite Patent
`
`
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`Patent No. 7,233,790
`Petition For Inter Partes Review
`Owner’s argument that the district court judge was “unlikely” to issue a stay
`
`
`
`
`
`pending IPR institution).
`
`Fintiv factors two (trial date), three (investment in proceedings), and four
`
`(overlap of issues) all weigh against the Board’s exercising its discretion to deny
`
`institution. The Delaware district court case is in its infancy: there have been no
`
`infringement or invalidity contentions, or claim construction exchanges or briefing;
`
`the initial case management conference has yet to be held; a claim construction
`
`hearing has not been calendared; and the trial date has yet to be set. Petitioner filed
`
`a partial motion to dismiss, including for lack of patentable subject matter under 35
`
`U.S.C. § 101, on June 10, 2022. Exs. 1020-1023. A hearing on that motion took
`
`place on February 9, 2023, and a decision is pending.
`
` Fintiv factor five has no weight because Petitioner and Patent Owner are
`
`the same parties as in the district court. Weatherford U.S. v. Enventure Global
`
`Tech., Inc., IPR2020-01684, Paper 16 at 11‒13 (PTAB Apr. 14, 2021). Fintiv
`
`explained that “it is often reasonable for a petitioner to wait to file its petition until
`
`it learns which claims are being asserted against it in the parallel proceeding.”
`
`Fintiv, IPR2020-00019, Paper 11 at 11. Here, Petitioner filed this Petition even
`
`before that, as Patent Owner has yet to serve contentions fully identifying the
`
`purportedly infringed claims. Accordingly, Petitioner has been diligent in pursuing
`
`
`
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`Patent No. 7,233,790
`Petition For Inter Partes Review
`its Petition; this too weighs against the Board’s exercising its discretion to deny
`
`
`
`
`
`institution.
`
`Finally, Fintiv factor six (other circumstances) does not weigh in favor of
`
`denying institution. This Petition is strong on the merits and demonstrates that all
`
`claims of the ’790 patent are rendered anticipated or obvious.
`
`Considering the Fintiv factors overall, institution would best serve the
`
`efficiency and integrity of the system.
`
`B.
`Becton Dickinson/Advanced Bionics/General Plastics Factors
`Denying institution under 35 U.S.C. § 325(d) would not be appropriate here,
`
`because the grounds and arguments relied on by this Petition were not previously
`
`presented to the Patent Office. None of the relied-upon art was considered during
`
`prosecution. This is the only IPR filed against the challenged claims.
`
`Further, because this is Petitioner’s first petition against the ’790 patent, the
`
`General Plastic factors do not weigh against institution. See General Plastic
`
`Indus. Co. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19, 16 (PTAB Sept.
`
`6, 2016) (precedential).
`
`
`
` 4
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`

`

`
`
`Patent No. 7,233,790
`Petition For Inter Partes Review
`III. PATENT OVERVIEW AND PRIORITY DATE
`A. Background of Digital Content Provisioning Systems for Wireless
`Communication Devices1
`Content provisioning systems for wireless communication devices were
`
`
`
`hardly new by the early 2000s. By the turn of the millennium, the popularity of
`
`such devices (e.g., cellular phones) had significantly increased, and applications
`
`(e.g., audio and/or video applications) for these devices became much more
`
`common. Ex. 1011, 1:44-46, 1:66-2:3; Ex. 1001, 1:32-45.
`
`Various techniques for provisioning digital content to a wireless device over
`
`a wireless network existed prior to 2002. Others had already described a technique
`
`for automatically detecting unprovisioned devices in a wireless network and
`
`subsequently initiating provisioning procedures. Ex. 1012, 2:47-51. Additionally,
`
`the art already included a technique for provisioning user applications to a wireless
`
`device through an integrated platform that handled all aspects of aggregation and
`
`management of such applications. Ex. 1010, 2:64-3:8.
`
`
`1 This background, and the Grounds of Unpatentability herein, are further
`
`supported by the Declaration of Petitioner’s expert, Anthony Wechselberger, who
`
`has over forty years of experience related to digital content management systems.
`
`Ex. 1002.
`
`
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`Patent No. 7,233,790
`Petition For Inter Partes Review
`Those in the art also recognized that users’ wireless (and wired) devices had
`
`
`
`
`
`different sets of capabilities. Ex. 1003, [0085]; Ex. 1010, 2:23-32; Ex. 1012, 12:4-
`
`12; Ex. 1024, pp. 243, 248, 250-252. Accordingly, those in the art would have
`
`recognized the feasibility of an integrated content provisioning system to provide
`
`appropriate digital content corresponding to the capabilities of the user’s wireless
`
`device. Ex. 1003, [0005], [0085]; Ex. 1010, 2:23-32, 2:64-3:8.
`
`B.
`Summary of the Alleged Invention of the ’790 Patent
`The ’790 patent, filed June 19, 2003, summarizes the invention as “a method
`
`and apparatus for providing access to content for use on wireless communication
`
`devices.” Ex. 1001, Summary of the Invention. According to the patent, multiple
`
`items of content are stored in a server system and made available for use in
`
`wireless communication devices used by wireless services subscribers. Id.; see
`
`also id., Abstract. Every independent claim of the ’790 patent requires maintaining
`
`a product catalog that includes a description of multiple items of content and
`
`references to different versions of each item of content, where each version
`
`corresponds to a different set of device capabilities. Id.; see also id., Cls. 1, 2, 8, 9.
`
`More specifically, the patent describes a download manager 1, which acts as
`
`an intermediary between multiple content suppliers 2 and multiple customers 3.
`
`Id., 4:11-15, Fig. 2. The download manager 1 includes a product manager 32 that
`
`interfaces with various content suppliers and provides centralized product
`
`
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`Patent No. 7,233,790
`Petition For Inter Partes Review
`cataloging. Id., 6:46-52. The product manager 32 determines, from a product
`
`
`
`
`
`catalog 54, which products are supported by the client device based on the
`
`capabilities of the client device. Id., 12:9-13. The download manager 1 includes a
`
`device capability manager 37 that conducts device recognition and device
`
`capability determination and management. Id., 7:31-39.
`
`Figure 3 (reproduced below) from the patent illustrates these elements along
`
`with other elements such as a provisioning manager 28.
`
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`Patent No. 7,233,790
`Petition For Inter Partes Review
`
`
`
`
`
`
`
`Ex. 1001, Fig. 3 (annotated).
`
`Upon receiving a request for an item of content from a client device, the
`
`provisioning manager 28 downloads the content using a provisioning protocol of
`
`the selected provisioning model. Id., 13:39-44; see also Ex. 1002, ¶¶ 50-54.
`
`C. Representative Claims
`Claim 2 is representative of the issues for this petition and is reproduced
`
`below with the claim elements.
`
`
`
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`
` 8
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`Patent No. 7,233,790
`Petition For Inter Partes Review
`U.S. Patent No. 7,233,790, Claim 2
`2[pre] A method of providing access to digital content for use on
`wireless communication devices, the method comprising:
`2[a][1] receiving and storing in a server system a plurality of items of
`digital content to be made available for use in wireless
`communication devices used by a plurality of wireless services
`subscribers,
`2[a][2] including receiving and storing a plurality of different
`implementations of at least one of the items of digital content, where
`each implementation of any given item of digital content corresponds
`to a different set of device capabilities;
`2[b] operating the server system to maintain a product catalog
`containing a description of the items of digital content, wherein the
`product catalog includes, in association with each item of digital
`content, a reference to each implementation of said item of digital
`content;
`2[c] receiving a request from a wireless device used by one of the
`subscribers;
`2[d] in response to the request, selecting a portion of the product
`catalog to be presented to the subscriber, based on device capabilities
`of the wireless device used by the subscriber; and
`2[e] presenting the selected portion of the product catalog to the
`subscriber via a wireless network, such that the selected portion, as
`presented to the subscriber, provides only a single description of each
`item of digital content in said portion, regardless of the number of
`implementations of each said item.
`
`
`
`Claim 2 and its dependent claims are representative of independent claims 1,
`
`8, and 9, and dependent claims of claim 9. For example, independent claim 9 and
`
`
`
` 9
`
`

`

`Patent No. 7,233,790
`Petition For Inter Partes Review
`its dependent claims are similar to claim 2 and its dependent claims, except that
`
`
`
`
`
`claim 9 and its dependent claims are written in apparatus form.
`
`Representative Claim 2
`See corresponding evidence for
`element 2[pre] (if preamble
`limiting)
`
`Evidence for this limitation is
`separately provided in element
`9[a]
`
`See corresponding evidence for
`element 2[a][1]; evidence for the
`limitation of “a storage facility” is
`separately provided in element
`9[b][1]
`
`See corresponding evidence for
`element 2[a][2]
`
`See corresponding evidence for
`element 2[b]
`
`Claim 9
`9[pre] A system comprising:
`
`9[a] a processor; and
`
`9[b][1] a storage facility accessible to
`the processor and containing code
`which, when executed by the
`processor, causes the processing
`system to receive and store a plurality
`of items of digital content to be made
`available for use in wireless
`communication devices used by a
`plurality of wireless
`telecommunications subscribers,
`9[b][2] including receiving and
`storing a plurality of different
`implementations of at least one of the
`items of digital content, where each
`implementation of any given item of
`digital content corresponds to a
`different set of device capabilities;
`9[c] maintain a product catalog
`containing a description of the items
`of digital content, wherein the product
`catalog includes, in association with
`each item of digital content, a
`reference to each implementation of
`said item of digital content;
`
`
`
` 10
`
`

`

`
`
`Representative Claim 2
`See corresponding evidence for
`element 2[c]
`
`See corresponding evidence for
`element 2[d]
`
`See corresponding evidence for
`element 2[e]
`
`
`
`Patent No. 7,233,790
`Petition For Inter Partes Review
`Claim 9
`9[d] receive a request from a wireless
`device used by one of the subscribers;
`9[e] in response to the request, select
`a portion of the product catalog to be
`presented to the subscriber, based on
`device capabilities of the wireless
`device used by the subscriber; and
`9[f] cause the selected portion of the
`product catalog to be presented to the
`subscriber via a wireless
`telecommunications network, such
`that the selected portion, as presented
`to the subscriber, provides only a
`single description of each item of
`digital content in said portion,
`regardless of the number of
`implementations of each said item.
`
`
`
`Likewise, independent claim 1 is similar to claim 2, but facially broader in
`
`claim scope.
`
`Claim 1
`1[pre] A method of providing access
`to content for use on wireless
`communication devices, the method
`comprising:
`1[a][1] receiving and storing a
`plurality of items of content to be
`made available for use in wireless
`communication devices used by a
`plurality of wireless services
`
`
`
` 11
`
`Representative Claim 2
`See corresponding evidence for
`element 2[pre] (if preamble
`limiting)
`
`See corresponding evidence for
`element 2[a][1]
`
`

`

`
`
`Representative Claim 2
`
`See corresponding evidence for
`element 2[a][2]
`
`See corresponding evidence for
`element 2[b]
`
`Patent No. 7,233,790
`Petition For Inter Partes Review
`Claim 1
`
`
`
`subscribers,
`1[a][2] including receiving a plurality
`of different implementations of at
`least one of the items of content,
`where each implementation of any
`given item of content corresponds to a
`different set of device capabilities;
`and,
`1[b] maintaining a product catalog
`containing a description of the items
`of content, the product catalog
`including, in association with each
`item of content, a reference to each
`implementation of said item of
`content.
`
`
`
`Independent claim 8 is similar to claim 2, but written in apparatus form and
`
`facially broader in claim scope.
`
`Claim 8
`8[pre] A system comprising:
`
`8[a] a network interface through
`which to communicate over a
`communication network; and
`8[b][1] a download manager to
`receive and store a plurality of items
`of content to be made available for
`use in wireless communication
`devices used by a plurality of wireless
` 12
`
`
`
`Representative Claim 2
`See corresponding evidence for
`element 2[pre] (if preamble
`limiting)
`
`Evidence for this limitation is
`separately provided in element
`8[a]
`
`See corresponding evidence for
`element 2[a][1]; evidence for the
`limitation of “a download
`manager” is separately provided in
`
`

`

`
`
`Representative Claim 2
`element 8[b][1]
`
`See corresponding evidence for
`element 2[a][2]
`
`See corresponding evidence for
`element 2[b]
`
`
`
`Patent No. 7,233,790
`Petition For Inter Partes Review
`Claim 8
`telecommunications subscribers,
`8[b][2] including receiving a plurality
`of different implementations of at
`least one of the items of content,
`where each implementation of any
`given item of content corresponds to a
`different set of device capabilities;
`and,
`8[c] maintain a product catalog
`containing a description of the items
`of content, the product catalog
`including, in association with each
`item of content, a reference to each
`implementation of said item of
`content.
`
`
`
`D. The Prosecution History
`The ’790 patent issued from U.S. Patent Application No. 10/600,746 (“’746
`
`Application”), filed June 19, 2003, which claimed priority to the June 28, 2002
`
`filing of U.S. Provisional Application Nos. 60/393,024 (Ex. 0005; “the ’024
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`provisional application”), 60/392,383 (Ex. 0006; “the ’383 provisional
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`application”), 60/393,041 (Ex. 0007; “the ’041 provisional application”), and
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`60/392,999 (Ex. 0008; “the ’999 provisional application”). See Ex. 1001, Field 22,
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`60.
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`The Examiner indicated that method claims 5-8 and 10-11 were allowable in
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`
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`the first office action. Ex. 1004, 65. In response, Patent Owner amended the
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`remaining claims to embrace the allowable claims. The Patent Owner cancelled
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`claims 1-4, changed dependency of claim 9, and added new claims 12-18 that
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`recite limitations substantially similar to the allowable method claims in apparatus
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`format. Id., 52-57.
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`As the reasons for allowance, the Examiner relied on the prior art failing to
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`disclose “receiving and storing a plurality of different implementations of the items
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`of content” and the art’s failure to “teach maintaining a catalog describing the
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`items of content.” Id., 43.
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`E.
`Priority Date (June 19, 2003)
`Patent Owner is not entitled to priority to an application before the June 19,
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`2003 filing date of the ’790 patent.2 Although the applicants, during prosecution,
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`claimed priority to the June 28, 2002 filing date of the ’024, ’383, ’041, and ’999
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`provisional applications, applicants never demonstrated that the provisional
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`applications actually support the issued claims of the ’790 patent. See Dynamic
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`Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1380 (Fed. Cir. 2015)
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`2 The references used in Grounds 1 and 2 are prior art to both the alleged June 28,
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`2002, and proper June 19, 2003 priority dates.
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`(“[B]ecause the PTO does not examine provisional applications as a matter of
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`course[,] such a presumption is . . . not justified” for patents that seek to claim the
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`benefit of a provisional application). Nor do the provisional applications actually
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`support such a claim.
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`For example, the provisionals do not contain supporting disclosure of “the
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`product catalog including, in association with each item of content, a reference to
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`each implementation of said item of content” as recited in claims 1, 2, 8, and 9
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`(emphasis added). The ’041 and ’999 provisional applications mention a “product
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`catalog,” but fail to disclose that the “product catalog” includes a reference to each
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`implementation of the item of content. See, e.g., Ex. 0007, 5, Ex. 0008, 4. Further,
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`Patent Owner never demonstrated that the provisional applications contain
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`supporting disclosure of “the selected portion, as presented to the subscriber,
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`provides only a single description of each item of digital content in said portion,
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`regardless of the number of implementations of each said item” as recited in claims
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`2 and 9 (emphasis added).
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`Because the claimed priority applications fail to describe, least the
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`limitations discussed above prior to June 19, 2003, and because those limitations
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`permeate the claims that are the subject of this Petition, Patent Owner cannot claim
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`priority to an application before this date. See Res. Corp. Techs., Inc. v. Microsoft
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`Corp., 627 F.3d 859, 869-70 (Fed. Cir. 2010) (“Entitlement to a filing date extends
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`only to subject matter that is disclosed.”).
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`F.
`Level of Ordinary Skill in the Art
`A person of ordinary skill in the art on the priority date for the ’790 patent
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`(“POSITA”) would have had a bachelor’s degree in electrical or computer
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`engineering, or a closely related scientific field such as computer science, and two
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`years of work experience with digital multi-media content distribution and
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`management, and associated system infrastructures. Alternatively, any lack of
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`experience could be remedied with additional education (e.g., a master’s degree),
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`and likewise, a lack of education can be remedied with additional work experience
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`(e.g., 4-5 years). Ex. 1002, ¶ 26.
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`IV.
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`IDENTIFICATION OF PRIOR ART
`A. U.S. Patent Application Publication No. 2002/0131404 to Mehta
`(Ex. 1003)
`Mehta is prior art under pre-AIA § 102(a) and (e) because it was filed on
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`November 28, 2001 and published on September 19, 2002. Mehta was not
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`disclosed to or considered by the Patent Office during prosecution of the ’790
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`patent.
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`Mehta is directed to computer- and network-based methods and systems for
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`maintaining and provisioning wireless applications to wireless devices. Ex. 1003,
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`[0005], [0059], Abstract. Mehta teaches a Mobile Application System (“MAS”)
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`that maintains and distributes wireless applications and other content to wireless
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`subscriber devices over a wireless network. Id., [0059-60]. Figure 1, reproduced
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`below, shows a block diagram that illustrates how subscribers 101, 101b of
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`wireless services request and download software applications from the MAS 105:
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`Ex. 1003 (Mehta), Fig. 1 (annotated).
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`Even the most cursory comparison of Mehta with the ’790 patent (Fig. 2
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`reproduced below) confirms the striking similarities of the respective disclosures:
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`
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`Ex. 1001 (’790 patent), Fig. 2 (annotated).
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`Mehta’s MAS “determines the type and capabilities of the subscriber device
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`from which the request was made and determines whether the device capabilities
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`are sufficient to support a specific application.” Ex. 1003, [0085]. Specifically,
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`the MAS analyzes various profiles such as “a subscriber profile, a device profile,
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`and an application profile” stored in “a data repository” to ensure that a specific
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`application can execute successfully on the subscriber device. Id., [0005], [0067],
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`[0099]. Upon receiving a request from the subscriber, the MAS determines an
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`initial list and “filters this initial list based upon subscriber and device capabilities”
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`to select an appropriate version of the requested item from the initial list. Id.,
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`[0067]. Subsequently, the MAS “provisions and packages the requested
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`application, and sends the packaged application to the requesting subscriber
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`device.” Id., [0070]; see also Ex. 1002, ¶ 37-40.
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`B. A Paper entitled “Mobile Applications with J2ME” to Schlapfer
`(Ex. 1009)
`Schlapfer is prior art under, least pre-AIA § 102(a) because it was published
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`on July 7, 2001.3 Schlapfer was not disclosed to or considered by the Patent Office
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`during prosecution of the ’790 patent.
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`Schlapfer is a paper that discusses Java technology related to mobile devices
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`and applications as of July 2001. Ex. 1009, 3. Specifically, it describes Java 2
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`Micro Edition (“J2ME”) as a platform for “[s]ervice providers who wish to deliver
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`content to their customers over resource-constrained devices.” Id., 4. Schlapfer
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`teaches that such